Someone has registered my business name: what you can do

Finding out that someone else has registered, as a trade mark, the name your business has been trading under for years does not settle the matter. Spanish Trade Mark Act 17/2001 of 7 December opens several routes —opposition, invalidity, reclaiming ownership and revocation for non-use—, each with its own deadline. Which one is available depends on the stage of the other party's file and on what you can actually prove.

What stage has the other party's registration reached?

The first check is a registry one: whether the application has been published and is still within the opposition window, whether the mark has already been granted, and whether the registration is final. The scope of what has been registered matters just as much, since it determines whether there is a genuine conflict or merely an apparent overlap. The factors that make a registration solid are set out in our guide on registering a trade mark in Spain.

If the application has been published: opposition and its two-month window

Article 19.1 of the Trade Mark Act gives standing to oppose to the proprietors of earlier trade marks or trade names and to the holders of the other earlier rights listed in article 9.1. The most common ground is article 6.1.b): similarity to an earlier mark for identical or similar goods or services where a likelihood of confusion exists, which includes the likelihood of association.

The deadline is not set by the Act —article 19.2 refers it to the implementing regulation— but by article 17.1 of the Regulation approved by Royal Decree 687/2002 of 12 July: two months from publication of the application in the Official Industrial Property Bulletin. An opposition is only treated as filed if the fee is paid within that window, under article 19.2. Once it expires, the matter moves to the ground of invalidity.

Once the mark is granted: invalidity before the OEPM or by counterclaim

Since 14 January 2023, jurisdiction to declare a trade mark invalid or revoked lies directly with the Spanish Patent and Trade Mark Office, and by way of counterclaim with the civil courts, under paragraph 2 of the first additional provision of the Trade Mark Act, whose entry into force on that date was set by the seventh final provision of Royal Decree-Law 23/2018 of 21 December.

Absolute invalidity under article 51.1 applies where the registration contravenes article 5 or where the applicant acted in bad faith, and article 51.2 makes that action imprescriptible. Relative invalidity under article 52.1 rests on the earlier rights in articles 6, 7, 8, 9 and 10. The official fee for an application for invalidity or revocation of a trade mark or trade name is €200.00, reduced to €170.00 where filing and payment are made electronically, according to the Office's fee schedule in force since 1 April 2026.

Two limits are decisive. Article 52.2 bars an invalidity claim by the holder of an earlier right who has acquiesced in the use of the later mark for five consecutive years while aware of that use, unless the application was made in bad faith. And article 61 bis.5 closes the administrative route to anyone who has already been sued for infringement: invalidity must then be raised as a counterclaim before the court. The window to choose your forum closes with the claim form.

An application filed in bad faith: cancelling or recovering the mark

Bad faith on the applicant's part is a free-standing ground of absolute invalidity under article 51.1.b), imprescriptible under article 51.2 and excluded from the acquiescence bar in article 52.2. It is the natural route where the person who registered knew the sign through a previous relationship with you.

A different action, however, is often preferable: the ownership claim under article 2.2, which allows you to claim ownership of the mark before the courts where the registration was applied for in fraud of a third party's rights or in breach of a legal or contractual obligation —the former shareholder, distributor or agent who registers in their own name the sign that identified someone else's business. The action must be brought before the date of registration, or within five years of its publication or of the date on which the mark began to be used under article 39. The registration is not cancelled here: its owner changes.

If the mark has gone five years without use: revocation

Registration does not protect a proprietor who does not use it. Article 39.1 requires genuine use in Spain for the goods or services registered within five years of registration, or without a five-year interruption, and article 39.2 places the start of that period on the day the registration becomes final. The consequence is revocation under article 54.1.a), sought before the Office or by counterclaim, and it may be partial under article 54.2.

The allocation of the burden of proof is what makes this route attractive: article 57 requires the proprietor to prove use or the reasons justifying its absence, and it neutralises token use, since use resumed in the three months before the application is disregarded where preparations began after the proprietor learned that the application might be filed.

Non-use also works defensively. If the warning letter becomes a claim, article 41.2 allows you to require the proprietor to prove genuine use during the five years preceding the action, provided the registration had been final for at least five years.

Earlier unregistered use: what it actually protects, and what it does not

This is where expectations are usually mistaken. Trading under a name for ten years, invoicing and advertising under it, does not by itself create an enforceable trade mark right: article 2.1 ties ownership to a validly effected registration. The exceptions are exhaustive and demanding in evidential terms.

The first is article 6.2.d): unregistered marks that are well known in Spain within the meaning of article 6 bis of the Paris Convention. The second, more common here, is article 9.1.d): a trade name, corporate name or business name which, before the filing or priority date, identifies in the course of trade a person other than the applicant, where a likelihood of confusion exists. The provision itself sets the bar: use or well-known status must be proved throughout the national territory. A local or regional presence does not meet that standard.

There is a parallel route that should not be confused with the above: article 6 of Unfair Competition Act 3/1991 of 10 January treats as unfair any conduct liable to create confusion with another party's activity, goods or establishment. It addresses market conduct, but it does not cancel a registration.

Negotiated coexistence and how to choose your route

Destroying the other registration is not always in your interest. Article 52.3 prevents a mark from being declared invalid where the holder of the earlier right had expressly consented to the registration, which is what gives coexistence agreements their effect: both sides define in writing the goods, services and scope of use. That is the sensible outcome where the signs are similar but not identical and the other party's mark is genuinely used.

The calculus reverses where the registration was filed in bad faith or where the mark has lain unused for five years. So the first step is not to write to the other party, but to establish three things: the stage of the file, the evidence available and the real objective —continuing to use the name, becoming the proprietor, or stopping someone else's use.

How we help with trade mark defence and registration at RCM Legal

There are two recurring mistakes when someone discovers their name is registered in another party's name: reacting too late, letting the two-month opposition window or the five-year acquiescence period in article 52.2 pass, and reacting through the wrong route, relying on seniority of use that the Act does not protect in the way the person assumes.

At RCM Legal we review the file at the Spanish Patent and Trade Mark Office, assess your position and pursue the appropriate route —opposition, an application for invalidity or revocation, an ownership claim or a coexistence agreement—, for both Spanish national marks and EU trade marks before the EUIPO in Alicante. If you are looking for trade mark and industrial property lawyers in Murcia to defend the name your business trades under, tell us about your case and we will set out which options remain open and for how long.